WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Island Trading Company, Inc. v. Paradise Creations Inc.
Case No. D2001-1337
1. The Parties
The Complainant is Island Trading Company, Inc. whose address is 601 W. 26th Street, 11th Floor, New York, NY, U.S.A. The Complainant is represented in this proceeding by Attorneys Lisa Pearson and Hannah Taylor, Fross Zelnick Lehrman & Zissu, P.C. 866 United Nations Plaza, New York, New York, U.S.A.
The Respondent is Paradise Creations Inc., located at 1560 Washington Ave. 111, Miami Beach, Florida, U.S.A. The Respondent is represented by Andrew Kunz.
2. The Domain Name and Registrar
The domain name in dispute is . The registrar for the disputed domain name is Network Solutions, Inc. (NSI), located at 505 Huntmar Park Drive, Herndon, Virginia, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on November 8, 2001. On November 16, 2001, the Center requested that the Registrar NSI check and report back on the registrant for the domain name . On November 19, 2001, NSI reported to the Center that the registrant was the Respondent in this proceeding and that the Policy and its dispute resolution provisions were in effect.
On November 26, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. On December 12, 2001, the Respondent asked the Center for an extension of the 20 day time period in which to file its Response. On December 13, 2001, per Rule 5(d), the Center granted the Respondent a 10 day extension until December 26, 2001, the date on which the Respondent's Response was in fact received.
The Administrative Panel submitted a Declaration of Impartiality and Independence on January 15, 2002, and the Center proceeded to appoint the Panel on January 18, 2002.
The Panel finds the Center has followed the Policy and the Rules in administering this Case.
4. Factual Background
The Complainant owns a music recording studio, South Beach Studios, located in the Marlin Hotel in Miami Beach, Florida. The studio has been operating since 1992, and the Complainant owns a United States service mark for the name South Beach Studios.
The Respondent is a company whose website resolves at the disputed domain name offering landscaping services. The Respondent registered the disputed domain name on March 14, 2000.
Toward the end of the year 2000, the parties had extensive phone contact to discuss the Complainant's claims that the disputed domain name infringed its mark rights, but the parties were unable to reach agreement. The Complainant also sent the Respondent letters on February 23, 2001, April 3, 2001, and June 5, 2001, (Complaint Exhibit K): the Complainant demanded the Respondent transfer the disputed domain name to the Complainant.
The Complainant now is seeking transfer of the disputed domain name in this proceeding.
5. The Parties' Summarized Contentions
Complainant's Summarized Contentions:
-- Through its widespread use of the South Beach Studios name, Complainant has also developed common law trademark rights in the name.
-- Complainant's South Beach Studios have attracted such well-known clients as Stevie Wonder, U2, Sarah McLachlan, Aerosmith, David Bowie, and Julio Iglesias (Complaint Exhibit D).
-- The Respondent is in the business of selling domain names and has attempted to sell the disputed domain name to the Complainant among others.
-- On at least one occasion the disputed domain name caused a client of Complainant's to ship some material to the Respondent. This is proof of actual confusion.
-- Respondent's domain name, , incorporates in its entirety Complainant's South Beach Studios mark.
-- Respondent's use of the disputed domain name is neither bona fide nor legitimate. (Guerlain S.A. v. Peikang, WIPO D2000-0055; Chanel, Inc. v. Buy B, WIPO D2000-1126).
-- Complainant has never given Respondent any license or authorization to use the Complainant's mark.
-- The website Respondent has posted at the domain name is for a landscape company (Complaint Exhibits G and L). Respondent's business is unrelated to Complainant's South Beach Studios, or a studio of any kind. Respondent is merely using Complainant's famous mark to drive traffic to its web site.
-- Because the ultimate effect of any use of the disputed domain name will be to cause confusion with Complainant South Beach Studios, the use and registration of the Domain Name must be considered to be in bad faith. (See Embratel v. McCarthy, WIPO D2000-0164; Forte (UK) Ltd. v. Ceschel, WIPO D2000-0283).
-- Bad Faith: Respondent clearly knew of the fame of the South Beach Studios mark when it registered . Given this evidence, the fact that Respondent proceeded with the registration of a domain name that incorporates the South Beach Studios mark in its entirety supports a finding of registration and use in bad faith. (Cortefiel, S.A. v. Miguel Garcia Quintas, WIPO D2000-0140; Fairmont Hotel Management L.P.v. Puts, WIPO D2001-0431).
-- Offering to sell a domain name is also evidence of bad faith, and Respondent has offered for sale (Corinthians Licenciamentos LTDA v. David Sallen).
-- Respondent's failure to provide full contact information in its application to register the domain name is also evidence of bad faith.
-- The disputed domain name should be transferred to the Complainant.
Respondent's Summarized Contentions:
-- The domain name was registered by Respondent on March 14, 2000, for the purpose of setting up landscape design studios to operate in South Beach, the popular beach town located in Miami Beach, Florida. The Respondent had operated national award winning landscape design studios for more than 15 years prior to moving to South Beach. The Respondent set up a website in April 2000, resolving at the domain name , to present its design services. In May 2000, the Respondent had color brochures printed to help promote this business (Exhibit AA).
-- Respondent has been operating this business and website continuously for a period of almost two years since April 2000. Respondent has never had any interest whatsoever in selling, renting, or transferring the domain name to Complainant or to any other party.
-- Respondent registered the domain name and has continuously operated this business and website using the domain name for a period of over eight (8) months prior to the November 20, 2001 notification of this complaint by Complainant.
-- Respondent had no intention or any means of commercial gain by misleadingly diverting consumers to its business since Respondent and Complainant are in very different businesses in completely different industries.
-- "Island Records" is the name that has been known in the industry, and known for working with a list of clients, not "South Beach Studios" as the Complainant falsely states.
-- In para 18 of the complaint, Complainant states that the address listed in Respondent's website was "approximately six blocks away from South Beach Studios." Although this is true, it has no relevance in this case as Respondent's business was located in an office district on the third floor of a large office building with no signage on the street, and no possibility of confusing Complainant's customers.
-- The Complainant's own Exhibit I-a shows this website listing similar domain names for sale, but clearly does not show the disputed domain name for sale. The domain name was purchased for use by the Respondent for their landscape design studios business, and has been used continuously for that purpose since its registration on March 14, 2000, and has never been for sale, or offered for sale to any party by Respondent.
-- During the two years the Respondent has been operating the disputed domain name website, only one piece of mail belonging to the Complainant has been wrongly delivered to the Respondent.
-- Because Complainant has not shown the trademark symbol on any of their literature, brochures, signs etc. as demonstrated by their own "Exhibit C", they have not given any notice to Respondent or the general public that the name is in fact trademarked, and because of this Respondent had no way of knowing if the name was or is trademarked.
-- Respondent has no interest in Complainant's business, and has no desire to "drive traffic to its site" as Complainant claims. Respondent's website is only an information source, and not the main source of clients that come to Respondent's business. Most of Respondent's clients come from word-of-mouth referrals.
-- Respondent was unaware of any trademark related to the domain name at the time of registration.
-- Relative to Complainant's charges that improper contact information denotes Respondent's bad faith, Respondent registered the disputed domain name following all proper procedures and listing all required information.
-- The disputed domain name should not be turned over to the Complainant.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name transferred to it, the Complainant must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainant has produced a database printout of its United States service mark registered on the principal register of the United States Patent and Trademark Office no. 1,761,794 dated March 30, 1993, in international classe 41 (sound studios) for the service mark South Beach Studios (Complaint Exhibit B). The Respondent's disputed domain name, , is identical to the Complainant's service mark. The Panel finds the Complainant has met its burden of proof under the Policy at 4(a)(i).
Legitimate Rights or Interests
The Complainant asserts it has not given the Respondent permission to use its South Beach Studios mark. The Respondent, for its part, has argued that it is using the disputed domain name as permitted by the Policy at 4(c)(i): "before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;"
The Respondent contends it is using the name South Beach Studios in the sense of landscape design studio, and that its business is unrelated to the Complainant's business. The Respondent claims to have been in this business for 15 years and to have won awards and to enjoy an international clientele. Despite these impressive verbal claims, however, the Respondent has produced virtually nothing to substantiate them. The printouts from the Respondent�s website and/or brochures (Response Exhibits AA and BB) show a few pictures of nice scenery, but there is nothing to show the Respondent executed this or any other landscaping work. More pertinently, there is nothing to show the Respondent was executing landscaping work using the disputed domain name before the Respondent knew of the Complainant and its mark and activities.
The Panel finds the Respondent has failed to show it was making a bona fide offering of goods and services before being notified of this dispute. Indeed, it appears the Respondent was in the business of selling the disputed domain name and other domain names, an issue the Panel will take up presently in the Bad Faith section.
Registered and Used in Bad Faith
The Complainant contends, and the Respondent did not dispute, that the Respondent has a website, planetwebnames, where the Respondent sells domain names for large sums of money. For example, the Complainant has produced a printout from this site in which the Respondent is offering more than 50 domain names for sale at prices starting from U.S. $2,000. As the Respondent points out, the disputed domain name is not on this list, bu similar names such as and SouthBeachproductions are. and many names related to landscaping and urban planning are also for sale on the list (Complaint Exhibit Ia).
As the Respondent repeatedly points out, there is no hard evidence such as a writing tending to show the Respondent attempted to sell the disputed domain name to the Complainant. However, the Respondent admits its address is only some six blocks from the Complainant's South Beach Studios recording studio. Given that the Panel has already found the Respondent has no legitimate rights and interests in the disputed domain name, and given that the Respondent has attempted to sell large numbers of other domain names, the Panel finds it reasonable to accept as true the Complainant's contention that the Respondent attempted to sell the disputed domain name to the Complainant over the phone (Complaint Exhibits G and G-a). (For some examples of bad faith inferences that previous panels have drawn from their case facts, see WIPO/ICANN Case No. D2000-0032, Nabisco Brands Co. v. The Patron Group, Inc., February 23, 2000; and NAF/ICANN Case No. FA0010000095836, Dollar Financial Group Inc. v. Pavon Financial Corporation, November 29, 2000.
Furthermore, in view of the U.S. $2,000 and more the Respondent was asking for the many domain names it was offering for sale at its planetwebnames site, the Panel finds the Respondent violated the bad faith provisions of the Policy at 4(b)(i):
"circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name."
7. Decision
The Panel finds the disputed domain name, , is identical to the Complainant's service mark South Beach Studios. The Panel further finds the Complainant did not authorize the Respondent to use the Complainant's service mark, and the Respondent failed in its attempt to demonstrate legitimate rights and interests in the domain name. On bad faith, the Panel finds the Respondent violated the Policy at 4(b)(i) by attempting to sell the domain name to the Complainant for more than the Respondent paid for it.
Therefore, in accordance with the Policy at para 4(i) and Rule 15, the Panel orders that the disputed domain name, , be transferred from the Respondent, Paradise Creations Inc., to the Complainant, Island Trading Company, Inc.
Dennis A. Foster
Sole Panelist
Dated: February 1, 2002
Full & Egal Universal Law Academy